Canadian ReMARKS

Articles

Quebec launches French Charter awareness campaign that impacts display of non-French trademarks on signage. The Office québécois de la langue française, the body responsible for applying and enforcing the Quebec Charter of the French language, has recently launched an awareness campaign that includes a policy that impacts upon the use in Quebec of non-French trademarks on signage by retailers.

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Canadian expungement proceedings. Section 45 of the Canadian Trademarks Act provides a means of summarily expunging (cancelling) trademarks from the Register that are no longer in use.

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Noteworthy cases

Recent Court decisions

Mövenpick Holding AG v. Exxon Mobil Corporation and Attorney General (Registrar of Trademarks), 2011 FC 1397 — Expert evidence of linguists relating to the meaning of words is unnecessary and unhelpful. The Federal Court dismissed an appeal from a decision of the Trademarks Opposition Board that held that Exxon Mobil's trademark MARCHÉ EXPRESS was not clearly descriptive of "convenience stores" or "dépanneurs" and was not confusing with Mövenpick's MARCHÉ trademark for use in association with restaurants. This decision is noteworthy as the Court's rejection of linguistic expert evidence is consistent with the Supreme Court of Canada's view, in Masterpiece v. Alavida, 2011 SCC 27, that expert testimony has a limited role in trademark cases.

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Clic International Inc. v. Convenience Food Industries (Private) Limited and The Registrar of Trademarks, 2011 FC 1338 — Expungement based on use of modified version of trademark. The Federal Court upheld a decision of the Registrar of Trademarks to expunge the trademark LAZIZA & Design pursuant to section 45 of the Trademarks Act on the basis that the use of a modified version of the trademark was insufficient to constitute use of the trademark as registered. This decision is a helpful reminder to trademark owners that in order to avoid possible expungement of their trademark registrations under section 45, the use of the trademark should be in substantially the same form as the trademark registered.

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McCallum Industries Limited v. HJ Heinz Company Australia Ltd., 2011 FC 1216 — Who is a "person interested" in order to bring expungement proceedings under section 57 of the Trademarks Act? The Federal Court has clarified under what circumstances a respondent in a section 57 expungement proceeding might challenge an applicant's standing to bring the application. This case is of particular importance as it provides a basis for determining when an applicant might not qualify as a "person interested" under the Trademarks Act, including, for example, where the applicant has delayed bringing the application.

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Trademarks Opposition Board decisions

Head Technology GmbH v. Jimmy Tees Inc., 2011 TMOB 235 — Example of the evidence required to satisfy the opponent's initial burden in proving that there was no continuous use of the applied-for mark under section 30(b) of the Act. The Trademarks Opposition Board refused an application to register the trademark STUNT HEADS & Design in part on the basis that there was no continuous use of the trademark in association with the relevant wares. Notably, the Opposition Board held that the opponent satisfied its light initial burden by establishing that the applicant was dissolved at some point during the relevant period.

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BBY Solutions, Inc v. Brick Warehouse LP, 2011 TMOB 199 — Unique forms of advertising may constitute use of a mark in association with services. The trademark YOUR BEST BUY IS AT THE BRICK was maintained in a section 45 cancellation proceeding for use in association with services that included the operation of a retail store and other retail services. This case is of particular importance as it establishes that unique forms of advertising, such as an advertisement placed on the side of a delivery vehicle that displays the trademark, can under some circumstances constitute use of a mark in association with services.

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CIRA domain name disputes

SUNBRELLA.CA – Glen Raven Inc. v. Tomislav Kotarac, CIRA Dispute No. 00173 — Bad faith may be presumed when the domain name is used for the purpose of commercial gain by creating a likelihood of confusion. Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, expanded the circumstances in which a complainant can show that a domain was registered in bad faith by adding a fourth enumerated circumstance and making the list of circumstances non-exhaustive. The Panel in this case found bad faith under the fourth enumerated circumstance and also held that the actions of the registrant can be seen as contrary to the general nature of the bad faith impugned by the Policy. This is the first decision of the Panel to consider the new policy.

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RANKINGS AND RECOGNITIONS

Smart & Biggar/ Fetherstonhaugh chosen by Managing Intellectual Property as Canada's IP Firm of the Year, Trademark Firm of the Year, and recognized for success with the award for Canadian Case of the Year
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Smart & Biggar/Fetherstonhaugh earns highest ranking in Managing Intellectual Property's 2012 patent survey
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Smart & Biggar/Fetherstonhaugh achieves top ranking in The Lexpert®/American Lawyer Guide to the Leading 500 Lawyers in Canada
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Smart & Biggar/Fetherstonhaugh recognized in the Lexpert® Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada, 2011 edition
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Smart & Biggar/ Fetherstonhaugh tops the rankings in Canadian IP law in the 2011 edition of Chambers Global — The World's Leading Lawyers for Business
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Smart & Biggar/ Fetherstonhaugh tops the rankings in The Best Lawyers in Canada®
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Smart & Biggar/ Fetherstonhaugh tops the rankings in Who's Who Legal: Canada 2011
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CANADIAN PRACTICE TIP

Canada has an unusual provision in its Trademarks Act ("the Act") that often creates difficulties for unsuspecting businesses when acquiring Canadian trademark rights.
 
Section 15(1) of the Act permits confusing marks to be registered only if they are owned by the same entity. Such marks are known as "associated" marks, and a note of the association with any other confusing marks owned by the entity is made by the Trademarks Office on all such associated registrations.
 
This provision can have a significant impact on assignability as an associated trademark cannot be assigned in isolation. Rather, an associated mark can only be assigned if all of the trademarks to which it is associated are also transferred or cancelled.
 
Therefore, when negotiating a transaction that involves the acquisition of Canadian trademark rights, it is important to conduct a search of the Canadian Trademarks Register to ensure that all "associated" marks are either transferred or cancelled.
 

To offer your feedback on this newsletter or any of its articles, please contact:

MANAGING EDITORS
Geneviève M. Prévost

 
Mark K. Evans

 
 

TMO NEWS EDITOR
Philip Lapin

 
 

 
 

ARTICLES EDITORS
Timothy P. Lo

 
Kohji Suzuki

 
 

CASE BRIEF EDITORS
Daniel M. Anthony

 
Heather E. Robertson

 
Ekaterina K. Tsimberis

DISCLAIMER

The preceding is intended as a timely update on Canadian trademark law and practice. To request a copy of any decision, paper or legislative document, or for more detailed information or to make suggestions, kindly contact any of the editors listed above. The contents of this newsletter are informational only and do not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly. To join the Canadian ReMARKS mailing list, be removed from the mailing list or make changes to contact information, please send an email to canadianremarks@smart-biggar.ca.

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